Book review: Research Handbook on Trademark Law Reform

At first glance, this book might easily be overlooked. The title's suggestion of legislative reform processes could scare off readers. Because the editors are US-based scholars and the EU's quaint spelling of "trade mark" is not used in the title, non-American readers might think the book is not for them. And the cover art somehow succeeds at being both bewildering and generic. All this can make the book, when not opened or examined more attentively, something of an ugly duckling in a book store aisle with fancy titles and appealing covers.

But make no mistake: behind the cover is a veritable treasure trove of thought-provoking scholarship. We soon learn that "Trademark Law Reform" refers to aspirations to tackle contemporary problems in trade mark law worldwide, whether by means of legislative overhaul or not, put to paper by some of the world's leading experts. In the introductory chapter, editors Graeme Dinwoodie and Mark Janis formulate the book's mission thus: "we have turned brilliant scholars loose with few constraints other than to reflect on trademark law problems and how they might be solved". Now that piques the interest, and the work of these "scholars at large" does not disappoint.

Don't judge this book by its cover

The contents of the book

Each of the book's chapters is quite unique and it is therefore worthwhile summarizing them briefly here.

Part 1: The trade mark registration process

Chapter 2, by Barton Beebe and Jeanne Fromer, addresses "trade mark depletion", i.e. the hypothesis that there is a limited supply of signs that can usefully serve as a trademark and that we're running out [earlier work here]. Their primary solutions are to increase maintenance and renewal fees and to have trade mark offices scrutinize dubious applications [e.g. here or here].

Chapter 3, by Robert Burrell and Michael Handler, addresses the problems of overbroad specifications [c.f here] and registration of signs mixing distinctive with descriptive/non-distinctive components, resulting in a lack of clarity over their scope of protection [earlier work here]. They would solve this by having offices query claims that seem unrealistically broad, and by requiring disclaimers of non-distinctive elements in signs.

Chapter 4, by Rebecca Tushnet, identifies a number of issues that registration in trade mark law gives rise to and offers further potential solutions to bulging registers and overbroad registrations [earlier work here]. Among other things, she suggests raising the bar for distinctiveness, perhaps even going so far as to "presume that inherent distinctiveness should have to be shown, with an exception for a subset of inherently distinctive symbols" [at 86].

Part 2: subject matter boundaries & requirements for protection

Chapter 5, by Martin Sentfleben, critically assesses the registration as trade marks of signs with cultural significance or even works of art [earlier work here]. He suggests stronger reliance on the public order and morality exception [in the EU: Art. 7(1)(f) Regulation 2017/1001] to deny the registration of such signs, along the lines of the EFTA's Vigeland decision [Katpost here; see also here for an alternative approach].

Chapter 6, by Caitlin Canahai and Mark McKenna, argue against extending trade mark protection to trade dress [roughly, product packaging and product design] in US law. They suggest trade dress is best protected through unfair competition law, with remedies limited to "labelling or packaging requirements sufficient to avoid passing off" [at 166].

Chapter 7, by Annette Kur, argues that the ban on registration of signs giving "substantial value to the goods" [Art. 7(1)(e)(iii) Regulation 2017/1001] should be stricken because it presents courts and agencies applying it with major difficulties [earlier work here, at 2.33-34]. However, Kur would simultaneously extend the scope of the "technical result"-ban in Art. 7(1)(e)(ii), so that signs for which the emphasis lies on "inherent, non-reputation related value that must be kept free from monopolization" can be opposed with greater flexibility [at 189].

Chapter 8, by Dev Gangjee, revisits the academic debate on the interplay between trade mark protection and innovation. Claims that trade mark protection facilitates innovation by allowing the recoupment of investments through sign exclusivity, and that it can spark innovation per se by offering protection for innovative services or branding strategies, have recently gained traction. However, Gangjee identifies four hurdles that any proposal for extension of trade mark protection on the grounds that it would incentivize innovation would have to pass, effectively concluding that "there is no necessary correlation between trade mark registrability requirements and innovation" [at 223].

Chapter 9, by Jake Linford, makes suggestions to "democratize" access to survey evidence, which is often unavailable to litigants with limited budgets. He makes the intriguing suggestion of relying on Amazon's Mechanical Turk platform to conduct online surveys, which is already used by scholars in the social sciences. At costs of USD 1 or less per respondent, such surveys may come out significantly cheaper than traditional surveys. Although Linford notes that, in the US context, costs would remain high due to the need to enlist experts, his proposal has much democratization potential in the EU, where the real cost lies in the surveys themselves and retaining experts is often not necessary.

Chapter 10, by Laura Heymann, utilizes naming theory to review doctrines surrounding deceptive, abandoned or disparaging marks [earlier work here and here]. She concludes that the key inquiry for trade mark validity should be whether consumers recognize it as a proper name, regardless of any metaphorical or context-dependent uses where they may communicate non-source identifying messages.

Part 3: trade mark scope & enforcement

Chapter 11, by Robert Bone, argues that the likelihood of confusion test should be recalibrated to check for (actual) harms "of the sort that trademark law cares about" [at 278, earlier work here]. While Bone would allow for a presumption of harm in most competing products cases, he advocates a requirement to show trademark-related harm in cases where it is prima facie unlikely that potential confusion would result in such harm.

Chapter 12, by Jennifer Davis, notes that, in UK passing off law, the average consumer has many faces: depending on the type of goods or claim at issue, courts have ascribed different characteristics to consumers [earlier work in [2015] IPQ 15]. She suggests that the average consumer test from registered trade mark law be used for cases of extended passing off.

Chapter 13, by Michael Grynberg, also deals with the average consumer in trade mark law and argues that she may be too easily confused. According to Grynberg, trade mark law should treat that consumer as a "skillful consumer" that "understands the market in which she shops and is familiar with the tools available to navigate it" [at 327], that would thus take ordinary care – a standard Grynberg borrows from tort law – to ensure she is not confused.

Chapter 14, by Jeremy Sheff, argues that the dilution doctrine lacks normative and empirical justification [earlier work here]. His proposal, "radical" by his own account, would be a reformulation of trade mark whereby we conceptualize trade marks as promises to consumers, and limit causes of action for infringement to instances where consumers have come to rely on that promise, e.g. by expecting goods or services of a certain quality [earlier work here].

Chapter 15, by Stacey Dogan, addresses intermediary liability from a US perspective [earlier work here]. Dogan criticizes a strand of U.S. case law that imposes direct liability for trade mark infringement on intermediaries and argues that courts should further develop the doctrine of intermediary liability on the basis of established principles of "derivative forms of infringement", notably contributory infringement.

Chapter 16, by Ansgar Ohly, rounds off the volume with a comparative study of the US and EU intermediary liability doctrines [earlier work here]. Ohly first flags a dual complexity that makes this area of the law so challenging. Firstly, it is unclear which liability regime must be applied: primary, secondary, or a novel liability regime, specific to intermediaries. Secondly, not all intermediaries are alike: the term's scope ranges from internet access providers to platforms specifically created to facilitate infringements. Ohly suggests that, doctrinally, the most promising form of liability is to impose a duty of care on intermediaries, and recognizes that the content of this duty will differ between intermediaries, leaving it up to the courts to further crystallize it.

Conclusion

From the summary above, the reader will in any event gather that the book packs a lot of punch for its weight; hopefully, the short summaries will allow them to determine whether the book is for them. This Kat suspects the book will be a great resource for any academic interested in trade mark law. It will accommodate both students searching for a thesis topic and veteran academics interested in how their colleagues have brought their seminal papers 'up to date'. If nothing else, this Kat can testify that just meandering through the different contributions is a great way to spend a Sunday afternoon.



Published: 2021
Format: Hardback
Extent: 456 pages
ISBN: 978 1 78536 620 8
Available from Edward Elgar Publishing, list price £160